A trademark owner is not required to conduct a search for conflicting marks prior to using a Mark, or prior to applying for registration with the U.S. Patent and Trademark Office (PTO). However, we highly recommend it. Only by conducting a search can one gain some comfort that a proposed Mark will not infringe a pre-existing (prior) Mark, now or 10 years from now when trademark owners discover each other. A full U.S. search will cover the U.S. Federal Register, all 50 state registers, and sources from which unregistered Marks (common law) may be discovered.

Moreover, in evaluating a Federal application for registration of the Mark, an examining attorney at the PTO will conduct a search of PTO records and notify the applicant if a Mark thought to conflict is found. An applicant is therefore forwarned by a search that reveals potentially conflicting registered Marks.

To determine whether there is a conflict between two Marks, a court (in infringement cases) and the PTO (in registration cases) determines whether there is "likelihood of confusion." That is, the court or PTO determines whether relevant purchasers would be likely to associate the goods or services of one party with those of the other party as a result of the use of their respective Marks. The first to "use" has the better right generally (More on "use" of a Mark, and the limitations of rights based on use, later).

The principal factors to be considered in reaching a decision are (i) the similarity of the Marks and (ii) the commercial relationship between the goods and services provided under the Marks. The test for infringement and registrability is "confusing similarity," a somewhat "fuzzy" test based on consumer perception. Marks need not be identical to conflict, and the goods and services need only be "related."

The PTO does not conduct searches for the public to determine if a conflicting Mark is registered, or is the subject of a pending application, except as noted above when acting on a "live" application. The PTO will not provide advice about possible conflicts between marks except in a pending application, and then after review of its own records only.

If you would like us to perform a trademark search for you, please contact us today, or utilize a reputable search firm such as Trademark Express.